Bradley Buchanan Connor v Kiztax Pty Limited

[1998] ATMO 65

TRADE MARKS ACT 1995

DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS

Re:Opposition by KIZTAX PTY LIMITED to registration of trade mark application number 706297 in the name of BRADLEY BUCHANAN CONNOR for the mark SCORE SPORTS in Classes 28 and 40

Background
Application number 706297 was filed on 12 April 1996, in the name of BRADLEY BUCHANAN CONNOR (the applicant).  The application was for the registration of the trade mark, SCORE SPORTS and covered the statements of goods, "Gymnastic and sporting articles excluding golfing related products " in Class 28, and "Custom manufacture of clothing, footwear and headgear" in Class 40.

Following examination, the application for the trade mark was advertised as accepted in the Australian Official Journal of Trade Marks of 10 April 1997.  A notice of opposition to the trade mark’s registration was filed by KIZTAX PTY LIMITED (the opponent), on 3 October 1997.  The notice of opposition listed a number of grounds.  However, the only matters which I consider were properly pursued at the hearing, and that the opponent's evidence went towards, were the allegations that the use of the trade mark would be likely to lead to deception and confusion because it was similar to the opponent's trade mark which had acquired a reputation in Australia; and that the trade mark did not distinguish the applicant's goods and services.  Accordingly, those grounds are the subject of this decision and the reasons for it.

The opponent requested a hearing in the matter and it came before me, as a delegate of the Registrar, in Sydney on 16 October 1998.  The opponent was represented by Mr Mervin Ward of Counsel, instructed by Ward Maxwell & Co.  The applicant did not appear and relied instead on written submissions.

The Evidence
The evidence in support comprised a declaration by Peter Wynn, the Managing Director of the opponent.  Mr Wynn gave details of the history of his company's use of the trade mark.  He also included sales, advertising and promotion details regarding goods bearing the trade mark, and he included, as exhibits, newspaper articles, advertisements, photographs, stationery and clothing bearing the mark.

The applicant did not serve any evidence in answer.

Submissions
Mr Ward made submissions in relation to what he said was the long and extensive use of the opponent's trade mark in the spoken and visual media, and also in newspapers and other publications.  He said that, from the evidence, it was clear that the word SCORE was depicted in a different and prominent typeface to the name PETER WYNN, and that this had created a perception that the word SCORE was identified with Mr Wynn and his company in its business of selling sports apparel and equipment.  He submitted that the applicant's trade mark was so similar to the opponent's mark that it was against the public interest to allow registration of this application because of the deception and confusion which would ensue.  All of this, Mr Ward said, had not been contradicted by any evidence from the applicant.

Mr Ward further submitted that, because the applicant had made no effort to differentiate its trade mark from that of the opponent's mark, then I should reject it on the basis that it was incapable of distinguishing  the applicant's goods or services from the goods or services provided by the opponent.

He concluded by saying that, at the very least, if the present trade mark proceeded to registration, then the opponent should be allowed to continue to use its own trade mark on the basis of honest concurrent use.

In his written submissions on file, the applicant submitted that the advertisements and clothing submitted by the opponent as evidence of use of its trade mark emphasised the name PETER WYNN rather than the word SCORE.  He said that, because of Mr Wynn's notoriety, it was that name in the mark which had public appeal rather than the word SCORE.  He said that the opponent had never promoted the word SCORE on its own and that, if it did consider that word to be the relevant part of its mark, the question remained as to why it had taken no action in relation to the applicant's already registered trade mark number 706341 - comprising the words SCORE SPORTING GOODS in a triangle device - and which included the goods, "gymnastic and sporting articles…" in its statement of goods.

The applicant concluded by submitting that the respective trade marks were not sufficiently similar so as to create any conflict in the minds of customers.

Analysis
As I previously said, the evidence in support in this opposition went towards two grounds listed in the notice of opposition.  These were, firstly, under s.60 of the Act, that use of the applicant's trade mark would lead to deception and confusion because it was deceptively similar to the opponent's mark which had acquired a reputation in Australia; and under s.41, that the trade mark did not distinguish the applicant's goods and services.  Mr Ward also concentrated his submissions on these two grounds and I will deal with them in turn.

Section 60 of the Act reads:
Section 60 - Trade mark similar to trade mark that has acquired a reputation in Australia

60.  The registration of a trade mark in respect of particular goods or services may be opposed on the ground that:

(a)  it is substantially identical with, or deceptively similar to, a trade mark that, before the priority date for the registration of the first-mentioned trade mark in respect of those goods or services, had acquired a reputation in Australia; and

(b)  because of the reputation of that other trade mark, the use of the first-mentioned trade mark would be likely to deceive or cause confusion.

In assessing the reputation of the opponents' mark in Australia, the relevant date is that of the filing of the opposed application, 12 April 1996 - Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592. Sales figures included in the opponent's evidence show that transactions under that mark had risen from three hundred and fifty thousand dollars in 1988 to nearly five million dollars in 1996. The evidence also shows that the opponent had widely advertised in newspapers, flyers and the like, and that Mr Wynn's business venture and his use of the opponent's trade mark had received substantial publicity in the print media. From the foregoing, I have inferred that the opponent had acquired, as at the relevant date, a significant reputation for its trade mark PETER WYNN SPORTS.

Given this reputation, I now must turn to the other aspect of this ground of the opposition - whether the applied for mark is substantially identical with, or deceptively similar to that of the opponent and, if it is, whether the use of the present mark would lead to deception and confusion.  It is obvious that the two trade marks are not substantially identical.  However, Mr Ward submitted that the subject mark was, at least, deceptively similar to that of the opponent.  Section 10 of the Act defines a trade mark as being deceptively similar to another trade mark if it so nearly resembles that mark that it is likely to deceive or cause confusion.  That risk must extend to a substantial number of people likely to be concerned in the purchasing of the goods - Kendall Co v Mulsyn Paint and Chemicals (1963) 109 CLR 300.

To determine deception and confusion, the trade marks should not be placed side by side but consideration should be given to any common impression carried away from them.  I refer here to the judgment in Australian Woollen Mills Ltd v F.S.Walton & Co Ltd (1937) 58 CLR 641, where Dixon and McTiernan JJ. said:

In deciding this question, the marks ought not, of course, to be compared side by side.  An attempt should be made to estimate the effect or impression produced on the mind of potential customers by the mark or device for which the protection of an injunction is sought.  The impression or recollection which is carried away and retained is necessarily the basis of any mistaken belief that the challenged mark or device is the same.  The effect of spoken description must be considered.  If a mark is in fact or from its nature likely to be the source of some name or verbal description by which buyers will express their desire to have the goods, their similarities both of sound and of meaning may play an important part.  The usual manner in which ordinary people behave must be the test of what confusion or deception may be expected.  Potential buyers of goods are not to be credited with any high perception or habitual caution.  On the other hand, exceptional carelessness or stupidity may be disregarded.  The course of business and the way in which the particular class of goods are sold gives, it may be said, the setting, and the habits and observation of men considered in the mass affords the standard.  Evidence of actual cases of deception, if forthcoming, is of great weight.

From the evidence, it appears that the opponent's mark in use normally comprises a combination of the name PETER WYNN and the word SCORE, albeit with those integers usually represented in different typefaces.  However, the name PETER WYNN and the word SCORE in the mark also appear combined in block type in advertisements and in the media.  The word SCORE, if it is ever used on its own, is normally used in a non-trade mark sense as a verb, e.g, "Score a super deal", or , "Do you want to score?".  From this I can only conclude that most people who see the opponent's mark would see it as a whole and not as PETER WYNN, or simply SCORE.  I do not think that members of the relevant purchasers would not think of visiting the SCORE shop but PETER WYNN'S SCORE shop.  The applicant's mark is also not the word SCORE, on its own, but the combination, SCORE SPORTS.

Given all of the foregoing, and having applied the tests outlined in the Australian Woollen Mills case, supra, I am of the opinion that a majority of the purchasing public would easily differentiate the respective marks and not believe that were deceptively similar.  I must therefore conclude that the risk of deception or confusion would not be great amongst a significant percentage of the relevant public.  Consequently, I find that the opposition fails, as it is based on this ground.

Section 41 of the Act, as it is relevant here, states:

Trade mark not distinguishing applicant's goods or services

(1)  …

(2)  An application for the registration of a trade mark must be rejected if the trade mark is not capable of distinguishing the applicant's goods or services in respect of which the trade mark is sought to be registered (designated goods or services) from the goods or services of other persons.

(3)  In deciding the question whether or not a trade mark is capable of distinguishing the designated goods or services from the goods or services of other persons, the Registrar must first take into account the extent to which the trade mark is inherently adapted to distinguish the designated goods or services from the goods or services of other persons.

…

This section of the Act has now been judicially considered by Justice Branson in the OREGON case, Blount Inc v The Registrar of Trade Marks (1998) 40 IPR 498. Her Honour observes that, in applying the provisions of s41, and in deciding whether a trade mark is capable of distinguishing, the Registrar has three options. He or she may conclude:

(a)that the trade mark is inherently adapted to distinguish the designated goods or services from the goods or services of other persons and capable, on that basis alone, of so distinguishing the designated goods or services; or

(b)that the trade mark is not to any extent inherently adapted to distinguish the designated goods or services from the goods or services of other persons; or

(c)that the trade mark is to some extent inherently adapted to distinguish the designated goods or services from the goods or services of other persons, but there is uncertainty, on that basis alone, that the trade mark is actually capable of distinguishing the designated goods or services.

Justice Branson says, at 504:

The structure of s 41 of the Act dictates that if the registrar reaches conclusion (a) above, then he or she will decide the question whether or not the trade mark is capable of distinguishing the designated goods or services from the goods or services of other persons by reaching the answer that it is so capable by reason of its inherent adaptability to distinguish: s 41(2) and (3). The registrar will, in such circumstances, be required, by reason of the terms of s 33(1) of the Act, to accept the application unless he or she is satisfied that the application has not been made in accordance with the Act, or that there are grounds, independent of capacity to distinguish, for rejecting the application.

The explanatory notes to the Trade Marks Act 1995 expand on the meaning of the term "inherently adapted to distinguish".  They say, inter alia:

Trade marks that are not inherently adapted to distinguish goods or services are mostly trade marks that consist wholly of a sign that is ordinarily used to indicate:

(a)  the kind, quality, quantity, intended purpose, value, geographic origin, or some other characteristic, of the goods or services; or

(b)the time of production of goods or of the rendering of services.

The application here is to register the words SCORE SPORTS as a trade mark in relation to gymnastic and sporting articles in Class 28, and the manufacture of clothing, footwear and headgear in Class 40.  Whilst the word SPORTS bears some relationship to the goods or services included in the specification, and the word SCORE a slight allusion to sports in general, their combination does not appear to convey any information about, or reference to, the goods or services covered.

Mr Ward argued that the applicant had not taken any steps to distinguish the present mark from what he said was the opponent's mark, SCORE, and that therefore the present mark did qualify for registration under s.41.  However, I have already found that the opponent's mark is not SCORE, alone, but PETER WYNN'S SCORE.  I also think it is relevant, in this regard, that the applicant already has a registration which is very similar to the present application - number 706341 for the word combination SCORE SPORTING GOODS in a triangle device and covering the gymnastic and sporting articles.  As a registered mark, this is considered inherently adapted to distinguish the applicant's goods.  It already coexists with the opponent's mark PETER WYNN'S SCORE in the marketplace, and apparently shares the same class of customer with no instances of deception and confusion reported in the opponent's evidence.  The matter of honest concurrent use is not an issue in the present instance, as s.44 only applies to an acceptance in the face of a prior registration.  The opponent's mark, PETER WYNN'S SCORE is not a registered mark.

From all of the above, I can only conclude that the present trade mark is inherently adapted to distinguish the applicant's designated goods or services and is, therefore, capable of distinguishing those goods or services from the goods or services of other persons.  Accordingly, the opponent does not prevail on this ground of its opposition.

Conclusion
Given the foregoing, I find that the opponent has not been successful on either of the grounds relied upon at the hearing.  Therefore, subject to any appeal from this decision, I direct that this application for the trade mark SCORE SPORTS should proceed to registration.

Costs
In respect of costs, I can see no reason why costs in the matter should not follow the result.  Accordingly, I order that the opponent pay the applicant's costs, in accordance with the official scale.

Ian Forno
Hearing Officer

16 December 1998